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Friday, 2 June 2017

Earlier this year, the French Court of Cassation (the country’s highest civil court) considered the registration of the word mark "Bébé Lilly" to be fraudulent because it was likely to confuse the public regarding the paternity of the claimant’s copyright works. Cass. Com. 11 January 2017, No 15-15750, Bull: Monsieur X c. Société Heben Music – here (in French). This decision extends trade mark protection to the bond existing between an author and his/her work. In a decision dated 11 January 2017, the French
Supreme Court settled a dispute between the recording company Heben Music and
Mr X, the author of two songs commercialised under the name of a
cartoon-character known as “Baby Lilly” (“Bébé Lilly” in French). The
songs, titled “Allo Papy Bébé Lilly” and “A
l’école”, were produced between June 2005 and June 2006, with the first
title being launched in March 2006.

Bébé Lilly "Allo Papy Bébé Lilly"
album/DVD cover (2006)

Three months after the commercialisation of the
first song, Heben Music applied to register the word mark “Bébé
Lilly” with reference to a number of goods and services categories (including
class 9, 16, 38) at national and international level. Mr X only found out about
the registration of the mark after his professional relationship with the
producer had deteriorated. In 2010, the composer decided to file for the
revocation of the trade mark he regarded to be fraudulent, and simultaneously,
for the registration of the work-mark “Bébé Lilly” under the classes 9 and 41.

Mr X argued that Heben Music’s registrations misled
the public with regards to “the origin and paternity of the works and
recordings” at stake, and as such fell foul of Article L711-3(c) of the French
Intellectual Property Code (IPC) – here. The latter holds that signs which may
“mislead the public, particularly as regards the nature, quality or
geographical origin of the goods or services”, serving as the national
equivalent to Article 4(1)(g) of the 2015 Trade Mark Directive - here.

"Papy" is not picking up for this Kat...

The Paris Court of Appeal rejected the author’s
claim in a decision heard on 27 January 2015. The Paris Bench considered that
the questions of copyright works’ “origin” or “paternity” fell outside the
ambit of Article L711-3 of the IPC. On appeal of the decision, the Court of
Cassation corrected this interpretation of Article L711-3 and received Mr X’s
arguments. The French Supreme Court considered that the above-mentioned
absolute ground of refusal would also apply whenever a mark deceives the public
with regard to the authorship of a protected work. The Court concluded that
trade mark law protects the average consumer's perception of "the
relationship between the sign the mark embodies and a work covered by authors’
rights or related rights”.

The French Court of Cassation also found Heben Music in breach of a contractual obligation of loyalty
towards their partner, Mr X, for registering word mark “Bébé Lilly” without his
consent or knowledge. Under French contract law, loyalty is recognised as a
component of the obligation of good faith parties owe to each other. As a
result, the highest civil court ordered the transfer of the marks to Mr X on
the basis of Article 712-6 of the IPC. (IPC, Art. 712-6 reads: “where
registration has been applied for, either fraudulently with respect to the
rights of another or in violation of a statutory or contractual obligation, any
person who believes he has a right in the mark may claim ownership by legal
proceedings” – here).

All in all, this decision of the Court of Cassation
confirms that one of the main functions of trade mark rights remains to secure
the public’s perception of the origin of goods and services, whether these
be manufacturers or authors. This decision is also interesting because it associates the connection between the origin of goods and services with the concept of “paternity” found under copyright law. The US Supreme Court reached the same conclusion in Dastar Corp, in
which Scalia J wrote " 'origin of goods' [...]
must be deemed to include not merely the producer of the physical item
[...] but also the creator of the content that the physical item
conveys" (Dastar Corp v Twentieth
Century Fox Film Corp, 539 US 23, at 33).

To an extent, this interpretation may help filling
some of the gaps left in authors’ protection against false attribution
conferred by moral rights; although the application of this would
remain confined to cases of trade mark registrations. This case also reasserts that the function of trade mark rights is to protect the origin of goods and services in its broadest sense, and as such includes the authorship of creative works. This means two things. The first, authors' claims of 'paternity' are not the preserve of copyright protection. And second, the overlap with copyright protection on this point does not rule out the use of trade mark rights to achieve the same result. As one might say, two [rights] are better than none.

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